THE FASHION LAW EXCLUSIVE – After filing suit against David’s Bridal, in connection with the alleged copying of her design patent and trade dress protected bridesmaid dresses, bridal designer Jenny Yoo is taking on New York-based brand, Faviana. Known for its red carpet copies, Faviana is coming under fire this time for copying Yoo’s patent-protected “Aiden” and “Annabelle” convertible bridesmaid dresses (pictured below).

According to Yoo’s suit, which was filed late last week in the Southern District of New York, a federal court in Manhattan, “Instead of pursuing independent product development or licensing products from third parties, Faviana has chosen to slavishly copy JY's innovative and distinctive design, in violation of [Jenny Yoo's] invaluable intellectual property rights.” The specific designs at issue: Yoo’s popular “Aiden” and “Annabelle” convertible bridesmaid dresses. Such designs, which are stocked by Nordstrom and have been spotted on celebrity bridesmaids, including Lady Gaga and Eva Longoria, among others, are covered by design patent protection, pending utility patent protection, and both trademark and trade dress protection.

According to New York-based Yoo’s complaint:

As a result of extraordinary creativity of Jenny Yoo's significant investment in research and development, in 2012 [Jenny Yoo] introduced into the market its innovative, convertible 'Aiden' and 'Annabelle' bridesmaid dress designs that have changed the face of the bridal fashion industry. JY's convertible bridesmaid gowns were unique when JY introduced them into the market because they are constructed with two front and two rear convertible panels attached to the waist of the dresses, which blend seamlessly into the bottom of the dress. These panels are easily reconfigured into many different 'looks', and their design and placement at the waist of the dresses allow the dresses to be made of lightweight material. The dresses feature convertible panels that can be raised and manipulated to create alterative necklines and skirt details.

Yoo takes issue with “at least two” of Faviana’s dress styles, which she alleges embody her design patent protection (one patent for the designer of a “dress” and the other for a “convertible dress”). The suit claims: "The copying by Faviana is so pervasive that the infringing products appear to be actual JY adresses - with the same ornamental and functional features. When the infringing products are worn in public, there can be little doubt that they would be viewed as JY products based upon the design alone."

Due to the similarities between the two brands' dresses, including the convertible nature of the Faviana copy ("Faviana style 7822 [pictured below] is five dresses in one! This convertible, chiffon dress a great staple for those who appreciate different silhouettes."), Yoo likely has a relatively easy case when it comes to showing patent infringement, her claims of trade dress infringement will be much more challenging. The trade dress that Yoo asserts – which, unlike the design patents cited, is not federally registered – is as follows:

A dress having a strapless upper garment (bodice portion covering an area above the waist of the user having a front and rear portion; a skirt having a front and rear portion attached to the upper garment (bodice); two front and two rear panels attached to the skirt, which extent downward so that they blend seamlessly with the skirt, and which can be raised, lowered, and attached into different configurations to create different design looks, such as a strapless configuration, classic halter configuration, Criss-Cross V-neck configuration, One Panel/One Shoulder configuration, Blouson Wrap configuration, and One shoulder bow configuration.

As we know from the classic Samara Bros v. Wal-Mart case, fashion designs are never inherently distinctive, and thus, in order to be eligible for trademark (or trade dress) protection, they must acquire distinctiveness over time. In the Samara Bros. case, the company, which designs and manufactures a line of children's clothing, alleged that Wal-Mart manufactured outfits based on photographs of its garments and offered them under Wal-Mart's house label. Samara filed suit against the discount giant in the U.S. District Court for the Southern District of New York in 1996 for infringement of unregistered trade dress.

In short: the Court held that if aesthetic or functional purposes, rather than source-identifying purposes, govern the design of the garments at issue, the garments will not be deemed “inherently distinctive,” but instead must develop secondary meaning (aka – that in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself) in order to enjoy trade dress protection.

This sets a high bar for Yoo and others who seek to prove trade dress rights and thus, trade dress infringement in connection with clothing. As we know from the case law in the Second Circuit, to determine whether secondary meaning exists, the court considers six factors: “(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.”

As for whether these factors weigh in Yoo’s favor is up for debate. But one helpful question with which I’ll leave you is as follows: Upon seeing Yoo’s convertible dresses, do you automatically think of the Jenny Yoo brand? If so, that may indicate that she has a strong case for secondary meaning, and if they do not, proving secondary meaning may be a tough hurdle and ultimately, a loss for Yoo.